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Litigation Details for OTSUKA PHARMACEUTICAL CO., LTD. v. SANDOZ, INC. (D.N.J. 2007)

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OTSUKA PHARMACEUTICAL CO., LTD. v. SANDOZ, INC. (D.N.J. 2007)

Docket ➤ Sign Up Date Filed 2007-03-02
Court District Court, D. New Jersey Date Terminated 2010-11-15
Cause 35:271 Patent Infringement Assigned To Mary Little Cooper
Jury Demand Defendant Referred To Magistrate Judge Lois H. Goodm
Parties APOTEX CORP.; APOTEX INC.; BARR LABORATORIES, INC.; BARR PHARMACEUTICALS, INC.; CADILA HEALTHCARE LTD.; OTSUKA PHARMACEUTICAL CO., LTD.; SANDOZ, INC.; SUN PHARMACEUTICAL INDUSTRIES LTD.; SYNTHON BV; SYNTHON HOLDING BV; SYNTHON LABORATORIES, INC.; SYNTHON PHARMACEUTICALS, INC; TEVA PHARMACEUTICALS INDUSTRIES, LTD.; TEVA PHARMACEUTICALS USA, INC.; ZYDUS PHARMACEUTICALS USA INC.
Patents 4,734,416; 5,006,528
Attorneys ALLYN ZISSEL LITE; CHARLES QUINN; ERIC I. ABRAHAM; GREGORY D. MILLER; JEFFREY A. COHEN; JOHN F. BRENNER; KATHERINE ANN ESCANLAR; MAYRA VELEZ TARANTINO; MELISSA ANNE CHUDEREWICZ; MICHAEL E. PATUNAS; PETER LOUIS GIUNTA
Firms Kenyon & Kenyon LLP
Link to Docket External link to docket
Small Molecule Drugs cited in OTSUKA PHARMACEUTICAL CO., LTD. v. SANDOZ, INC.
The small molecule drugs covered by the patents cited in this case are ➤ Sign Up and ➤ Sign Up .

Details for OTSUKA PHARMACEUTICAL CO., LTD. v. SANDOZ, INC. (D.N.J. 2007)

Date Filed Document No. Description Snippet Link To Document
2008-09-25 169 Otsuka previously listed another patent (now expired U.S. Pat. No. 4,734,416) in the FDA Orange Book as …alleges that Apotex committed patent infringement with respect to U.S. Patent No. 5,006,528. “[T]he alleged…Defendant also represents that this patent had broader claims than the patent in suit, and until its expiration…Otsuka to defend agaisnt Apotex’s allegations of patent invalidity and unenforceability; and (3) other… relevant to Apotex’s allegations that Otsuka’s patent is invalid and unenforceable. (Def.’s Br. at External link to document
2010-10-12 372 Brief reexamination of the patent-in-suit, Otsuka’s U.S. Patent No. 5,006,528 (“the ’528 patent”). Defendants…claims of the patent-in-suit would have been obvious to a skilled artisan and the patent-in-suit is unenforceable… asserting that the U.S. Patent Office rejected the claims of the ’528 patent over the “2,3-dichloro …In fact, as the ’528 patent reexamination file history makes clear, the Patent Office never rejected…assertion that the claimed subject matter of the patent-in-suit would have been obvious. Defendants’ new External link to document
2010-11-11 381 840 patent is a division of U.S. Patent No. 4,734,416 (“the ‘416 patent”), another Otsuka patent, and…of the ’528 patent, the PTO found the claims patentable over a related patent (U.S. Patent No. 4,824,840…infringement of U.S. Patent No. 5,006,528 (“the ’528 patent”), arising under the United States patent laws, Title…Examiner cited U.S. Patent No. 4,824,840 (“the ‘840 patent”), a prior Otsuka patent. [DTX 116 at 0000065…references, including the ‘416 patent, German Patent No. 2,912,105 (“the DE ’105 patent”) and the Banno article External link to document
2010-11-11 382 listed two patents in the FDA Orange Book as covering aripiprazole: U.S. Patent No. 4,734,416 (issued …’528 Patent Are Not Patentably Distinct from Claim 13 of the ’416 Patent Because…the “’416 patent”) and U.S. Patent No. 5,006,528 (issued April 9, 1991) (the “’528 patent”). Otsuka’…infringement of U.S. Patent No. 5,006,528 (“the ’528 patent”). (D.I. 13.) The ’528 patent is entitled “Carbostyril…two patents in the FDA Orange Book as covering aripiprazole— the ’528 patent and the ’416 patent. (DTX External link to document
2010-11-11 383 (“Otsuka had also listed U.S. Patent No. 4,734,416 (‘the ’416 patent’) in the Orange Book for [aripiprazole… patenting compares claims in an earlier patent to claims in a later patent or application…into the Cheruvu patent and a patent file is accessible to the public on the date a patent issue. 37 …to the patent office.”) (holding patent invalid under §§ 101/112). The ’528 patent has no…TYPE DOUBLE PATENTING ARE NOT THE SAME. Otsuka contends that the double patenting analysis in External link to document
2010-11-15 385 obviousness-type double patenting over Otsuka’s prior art U.S. Patent No. 4,734,416 (the “‘416 Patent”); and unenforceable…in the ‘416 Patent as well as Otsuka’s German Patent No. 2,912,105 (“the DE ‘105 Patent”); 2,3 dichloro…the ‘528 Patent as obvious over the disclosures in the ‘416 Patent and the DE ‘105 Patent of prior…a later patent that are not patentably distinct from claims in a commonly owned earlier patent.” Sun…where the earlier patent and later patent are not part of the same patent family and issue from separate External link to document
2010-12-15 391 delete “U.S. Patent No. 5,000,528” and replace with “U.S. Patent No. 5,006,528” Case 3:07… a) change “U.S. Patent No. 5,000,528” to “ U.S. Patent No. 5,006,528”; and IT IS FURTHER… 15 November 2010 3:07-cv-01000-MLC-LHG Patent Defendant District Court, D. External link to document
Date Filed Document No. Description Snippet Link To Document

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